DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/30/2025 has been entered.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings filed 4/25/2025 are accepted.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 and 13-21 (all pending claims) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
There is no support in the original disclosure for the limitation “wherein the at least one identifier has an area, wherein the at least one identifier comprises a pattern formed over the area, wherein the pattern comprises at least one color variation thereacross.”
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13 and 14 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Said claims depend from canceled claim 12. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s)1-3, 5-11 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boucke (US 2024/0246316) in view of KO (US 2021/0229414) and Sullivan (US 6,29,969).
Boucke teaches method comprising: applying a printed image (visual print layer) to a substrate (core) (0022) on a first side of the substrate, applying an embossed in register (EIR) layer on a side of the printed image opposite the substrate (0021).
Boucke is relied upon as above. Furthermore, it is noted that embossed-in-register printing is a process of aligning an embossed pattern with a printed pattern and printing the embossed pattern on the printed pattern to impart three-dimensional protrusion and depth to the printed pattern. Specifically, in embossed-in-register printing, a specific pattern is printed on a substrate material, an embossed or engraved pattern is aligned with the printed pattern, and then embossing printing is performed to provide the embossed or engraved pattern to the printed pattern (0002 of “Ko”). Boucke does not teach that alignment is achieved by the printed image comprising at least one identifier; detecting the at least one identifier. However, Ko teaches an EIR process wherein the method includes obtaining, by a sensor, information about the printed pattern of the print layer formed on one surface of the substrate; and controlling operation of the embossed-in-register device by a controller based on the information provided by the sensor about the printed pattern (0028). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize the alignment technique of Ko comprising a sensor obtaining information about a printed pattern to align the embossing and printing of an EIR film disclosed in Boucke. The motivation for doing so would have been because Ko teaches such a method ensures alignment of the print layer and embossed pattern.
Boucke in view of Ko is relied upon as above. Specifically, Ko teaches information about the printed pattern is obtained by the sensor and utilized to align the printing and embossing. Ko does not explicitly teach the information of the printed pattern should comprise an identifier that has “an area” and “a pattern formed on the area”. However, Sullivan teaches placing a printed mark on the leading edge of a sheet to be detected by a sensor to ensure alignment of the sheet for processing (col 5, lines 34+). The printed mark may then be subsequently cut off the sheet (col 5, lines 34+). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize a printed mark on the leading edge of the printed substrate disclosed in Boucke. The motivation for doing would have been that Sullivan teaches such a printed image is useful for printing a mark readable by a sensor to ensure alignment of the sheet during processing. Said printed mark is understood to read on the claimed “identifier” that has “an area” and “a pattern formed on the area”.
With regards to the limitation that the “a pattern comprises at least one color variation thereacross,” the use of multiple colors in the identifier is understood to be an aesthetic choice. The courts have held that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art.
With regards to claim 2, Boucke teaches applying the printed image to the substrate by printing ink on a film with the film coupled to the substrate (0022).
With regards to claim 3, Boucke teaches applying the printed image to the substrate by applying printing ink on a film and then applying the film with the ink printed thereon to the substrate (0022).
With regards to claim 5, Boucke teaches applying the EIR layer on the side of the printed image opposite the substrate and Ko teaches optically capturing (with an “sensor”) at least one identifier of the at least one identifier to aligning the corresponding pattern of the EIR layer with the pattern of the printed image based on the optically captured at least one identifier.
With regards to claim 6, Boucke teaches the substrate may comprises MDF or HDF (0003) herein understood to read on the claimed “fiber core”. Boucke’s method further comprises depositing a layer of adhesive between the substrate and the printed image (0022).
With regards to claim 7, Boucke teaches the layer of adhesive disposed between the substrate and the printed image comprises polyurethane reactive (PUR) adhesive (0022).
With regards to claim 8, Boucke teaches the printed image does not need to comprise a film (0022).
With regards to claim 9, Boucke teaches the image may be applied with ink jet printer (0019)-herein understood to read on the claimed water-based ink. With regards to claim 10, said ink is understood to inherently possess “an adhesive” since said ink adheres to the substrate.
With regards to claim 11, Boucke does not suggest a method comprising applying a layer of adhesive on the second side of the printed image.
With regards to claim 12, Sullivan teaches the at least one identifier is optically capturable (by an “sensor”) and Ko teaches using information regarding the printed image to permit alignment of the pattern of the printed image with the corresponding pattern of the EIR layer.
With regards to claim 16, Boucke teaches he pattern may comprises a wood grain pattern, a geometric pattern, an organic pattern, a stone pattern, or combination of images (0018).
With regards to claim 17, the prior does not teach a plurality of identifiers spaced along the longitudinal axis. However, the courts have held the mere duplication of parts has no patentable significance unless a new and unexpected result is produced.
With regards to claim 20, Boucke does not teach storing the final product as a roll. However, it is common in the art to roll a film into a finished roll for ease of storage and transport (see e.g. US 2019/0299583 at 0034).
With regards to claim 21, Sullivan teaches trimming the edge with the identifier from the remainder of the substrate.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boucke (US 2024/0246316) in view of Ko (US 2021/0229414) and Sullivan (US 6,29,969), as applied to claims above, and further in view of Chen (2004/0086678).
Boucke is relied upon as above, but does not teach the UV-curable ink utilized to make the printed image. However, Chen teaches that UV-curable ink printed layers may be used in EIR laminates. Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize UV curable ink to print the printed layer of Boucke. The motivation for doing so would have been the art teaches UV curable layers are suitable for use in printed layers subjected to EIR.
Claim(s) 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boucke (US 2024/0246316) in view of Ko (US 2021/0229414), as applied to claims above, and further in view of Herring et al (US 2005/0257880).
Boucke in view of Ko and Sullivan is relied upon as above and teaches the print layer may include an identifier, but does not teach the identifier comprises a barcode. However, Herring teaches suitable embossable images for EIR films include 2D and 3D barcodes and other machine readable images (herein understood to anticipate the QR code or data matrix of claim 14). Thus, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to utilize barcodes. Data matrix, or QR codes as the identifier. The motivation for doing so would have been Herring teaches such marks are known to be included in EIR laminates.
Response to Arguments
Applicant's arguments filed 12/30/2025 have been fully considered but are not persuasive.
Applicant argues the new limitations of claims 1, 18, and 19 find support at least by paragraph [0030]. The examiner respectfully disagrees, as noted above. Applicant is requested to provide a more detail explanation of where the amendments are supported in the original disclosure.
Rejections Under 35 U.S.C. §§ 102 and 103
With regards to the rejection of claims 1-3, 5-11 and 15-20 under 35 U.S.C. § 103 as allegedly being unpatentable over US Patent Application No. 2024/0246316 to Boucke (hereinafter "Boucke") in
view of US Patent Application Publication No. 2021/0229414 to Ko (hereinafter "Ko"), applicant submits that Boucke and Ko fail to teach the newly added limitation of claim 1 and 18 of “applying a printed image to a substrate on a first side of the substrate, wherein the printed image comprises at least one identifier, wherein the at least one identifier has an area, wherein the at least one identifier comprises a pattern formed over the area, wherein the pattern comprises at least one color variation thereacross.” The examiner respectfully disagrees for the reasons set forth above.
Further, Applicant submits that the combination of Boucke and Ko would not have been obvious because Ko requires use of a transparent film 42 so that the color sensor can detect the printed ink through the transparent film for embossing. This method is inapplicable to Boucke, which describes forming the textured layer using digital printing of the textured surface onto the substrate (see paragraph [0019]). Boucke does not use a transparent film. Accordingly, the method of Ko is inapplicable to the method of manufacturing Boucke. Said argument is noted but is moot in view of the new grounds of rejection. Specifically, the embossing method of Ko is no longer understood to be rendered obvious; rather, Ko is relied upon merely for its teaching of using an optical sensor an information from the printed image to align the EIR embossing process.
Summary and Dependent Claims
Applicant further argues Chen and Herring fail to cure the deficiencies of Boucke and Ko. Said argument is not persuasive for the reasons noted above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEVIN R KRUER whose telephone number is (571)272-1510. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KEVIN R KRUER/Primary Examiner, Art Unit 1787